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Application Drafting Dangers Highlighted by Pacing Technologies v. Garmin International

The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim.  The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim.  Considering lessons of this case when drafting U.S. patent applications and when interpreting issued claims with respect to possible infringement can help practitioners write better applications and make better arguments during litigation or other post-issuance activity.

Federal Circuit Decision:  Claim 25 of U.S. Pat. No. 8,101,843, the only independent claim asserted by Pacing Technologies, recites in its preamble a “repetitive motion pacing system for pacing a user.”  The term “repetitive motion pacing system” is not present in the body of claim 25, but the Federal Circuit nevertheless held that this preamble term is limiting because otherwise the body of dependent claim 28 would lack antecedent basis.  The Federal Circuit also noted that “objects of the present invention” listed in specification are characterized in the specification as all being “accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes … a data storage and playback device adapted to producing the sensible tempo.”  The Federal Circuit deemed the specification describing an embodiment of a repetitive motion pacing system that does not need to produce a sensible tempo, as argued by Pacing Technologies, to not refute the interpretation that the repetitive motion pacing system in the claim at issue must produce a “sensible tempo” despite that term not being present in the claim.

Lesson:  A term in a claim’s preamble that provides antecedent basis to a term in that claim’s body or in any claim that depends therefrom can result in at least that portion of the preamble being a requirement of the claim.  What may seem like an innocuous preamble term during prosecution may not end up being so innocuous post-issuance.  Careful claim phrasing can usually prevent preamble terms from being used in a claim’s body and thus help prevent importation of the preamble term into the claim’s requirements.

Lesson:  The specification identifying objects or features of “the present invention” can be a dangerous drafting strategy, as demonstrated by this case.  Even a simple qualifier like “at least some embodiments of the present invention accomplish one or more of the following objects or features” could help mitigate this risk, as could merely listing “an object of the present invention is…” without a further blanket statement that all listed objects are accomplished by “the present invention.”

Lesson:  Remember that a claim need not cover all embodiments described in the specification, just that the claim will typically be interpreted to include embodiment(s) identified in the specification as being preferred.  Also remember that the specification being silent about whether a feature is present in a described embodiment does not necessarily mean that the embodiment does not include that feature.  Being careful with language used in the specification and claims can help prevent unintentional claim interpretations based on descriptions provided in the specification.

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Christina Sperry is a Mintz patent attorney who drafts and prosecutes patents for clients in the electrical, mechanical, and electro-mechanical fields. She represents companies and academic institutions in the medical technology field and helps protect patent innovations for medical and surgical devices.